Katherine O’Malley
Associate Editor
Loyola University Chicago School of Law, 2025
The United States Patent and Trademark Office (USPTO) issued guidance regarding inventorship and AI-assisted innovations in a notice dated February 13, 2024. The guidance addresses the complex issue of AI involvement in invention and patentability. Patentability requires human inventors, but the increasing role of artificial intelligence (AI) in the innovation process has prompted the USPTO to clarify the parameters of inventorship. While affirming the significant contribution of AI to innovation, the USPTO emphasized that patents for AI-assisted inventions still require significant human contribution, though not necessarily exclusively. This recognition underscores the evolving nature of innovation and patent law in response to technological advancements.
Generative AI has taken hold of our society in recent years and is now at the forefront of the media due to Open AI’s ChatGPT, which makes interactive AI easily accessible to the public. However, AI technology has been in existence for over seventy years. So how does AI affect inventions? Inventors pursuing patents must establish certain requirements to meet the patentability of their invention. Now, with the integration of AI, concerns have arisen regarding inventorship and the patentability of AI-assisted innovations when applying for a patent.
There has been debate surrounding the role of AI in patentable inventions. In Spring 2022, the Federal Circuit ruled that AI cannot be named as the sole inventor under the Patent Act, but this did not clarify the issue of whether AI assistance hinders an invention unpatentable. The Federal Circuit only clarified that under the Patent Act, inventors are defined as “individuals” such that an inventor must be human and cannot be AI. Following Joe Biden’s executive order, the USPTO published guidance on the issue of inventorship in the context of AI-assisted inventions on February 13, 2024. In this guidance, the USPTO provided separate examples of AI-assisted inventions to help illustrate what a significant human contribution is when AI is also involved in the development of the invention.
The USPTO’s Example 1
The first example illustrates the step-by-step analysis of the Pannu factors the USPTO uses when determining if an inventor has made a significant contribution. An inventor has made a significant contribution to the invention if they:
“(1) contributed in some significant manner to the conception of the invention; (2) made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and (3) did more than merely explain the well-known concepts and/or the current state of the art.”
The guiding principles in the USPTO’s first example stipulate that if a human merely presents a problem to an AI system without any substantial contribution, they do not qualify as a proper inventor of an invention that’s been derived from the AI system’s output. However, the main guiding principle points out that a human’s use of an AI system in creating an AI-assisted invention does not automatically disqualify them. However, the inventor must make a significant contribution such as making alterations to the output produced by an AI system to arrive at a completely new design.
The USPTO’s examples and the step-by-step analysis provided are just the beginning, as the USPTO has also indicated they will continue to provide clarity on other issues arising from AI, such as subject matter eligibility, obviousness, and enablement. However, it is important to note that the guidance is not substantive rulemaking or effective laws and only helps clarify to those applying for patents to disclose the use of AI assistance and that such disclosure will not negate their ability to qualify as an inventor. This new guidance simply clarifies inventorship and points out that an applicant has a duty to disclose all information that is material to patentability, which includes AI-assistance disclosures.
Even if AI is here to stay, the human mind matters
The emphasis on human contribution aims to promote and incentivize human ingenuity. This is logical because AI systems lack the cognitive capacity necessary to satisfy the mental act required for inventions or discoveries. We want to reward humans and not computers. Although modern inventorship is assisted greatly by computers of all sorts, we must maintain significance in human contributions. The USPTO’s efforts show that there must be a balance between innovation and inventorship as this technological race in AI evolves. When grounding this guidance in the purpose of the Patent Act, this notice helps inventors and pushes their innovations, and this clarification will probably lead to quicker and better innovations in conjunction with AI assistance. The USPTO got this one right, but it is still an “iterative process.”